SHOULD I CONSIDER FILING A PCT APPLICATION

• An inventor or small business should base a decision to file a PCT on more than simply a desire to have coverage in as many nations as possible.
• Perhaps most importantly, the inventor should be aware that foreign patent protection can be a very expensive proposition  and the costs can quickly escalate well beyond the ability of most small businesses to pay.  U.S. patent protection is typically a fraction of the cost of foreign patent protection.  Costs are explained on another page: pctcosts.
• A PCT application should NOT be filed if a public disclosure or attempted sale of the invention is made before the first filing of a patent application. Public disclosure of information about an invention up to a year prior to filing a U.S. patent application is permitted in the United States, but it can invalidate an applicant’s right to patent protection in many foreign jurisdictions.   See the italicized “Note” at:  What disqualifies you from obtaining a patent.
• One can claim priority back to an earlier application’s filing date if the PCT application is filed within a year of the earlier application.So, one must have filed the earlier application before the public disclosure and within a year of the PCT application.  The earlier application’s filing date is then the “priority date” for the PCT application.  If no prior application is involved the “priority date” is the filing date of the PCT application.

• Beware:  You do not get a second year for filing a PCT application within a year of a nonprovisional application that claims the benefit of a provisional application. For example, suppose a provisional application is filed, then about a year later a U.S. nonprovisional application is filed.  The nonprovisional properly claims the benefit of the earlier-filed provisional application. In that circumstance, one does not get another year to file a PCT application claiming the benefit of the non-provisional application. One may not claim the benefit of the nonprovisional application and ignore the filing date of the provisional application. The Paris Convention (Article 4(C)(4)) prevents an inventor from claiming the benefit of the second application where the first application (the provisional) was pending at the time the second application was filed. A public disclosure before an application’s filing date can often disqualify one for a non-U.S. patent. See the italicized “Note” at:  What disqualifies you from obtaining a patent.
• Oftentimes, a small business simply wants to keep options open, assuming a sale or licensing of the invention can be negotiated with a deep-pockets investor. So, an initial filing of a U.S. application (either a provisional or a non-provisional), and then within a year, a PCT application is filed claiming the earlier filing date as the priority date for its invention. This gives the inventor up to 18 months to make a decision on where to file national stage applications. This option can cost about $3,800 in excess of simply filing a U.S. application. See PCT Costs for more information.

PCT FILING STRATEGY FOR U.S. RESIDENTS

• Some strategy on designating the International Search Authority might save money, but could pose other intangible problems. The International Search Authority is the patent office that does the first preliminary look at patentability during the international stage. The U.S. and the European Patent Office have high search fees: $2,080 for the U.S.(eff. 01-APR-2010) and $2,485 for the EPO. Currently, the Korean Intellectual Property Office search fee is $1,397.00.
• An unstated and difficult to prove problem in selecting an International Search Authority in a country that is not your primary market for your invention, is that the country that is your intended primary market will tend to discount the search that was done and give your application more scrutiny during the national stage.
• Also, the EPO will not act as an International Search Authority or International Preliminary Examination Authority for applications with one or more claims to a business method, and the Australian Patent Office will not serve these functions for applications with one or more claims drawn to mechanical engineering or analogous fields of technology as defined by certain International Patent Classification classes.
• Filing a PCT application first (before any other application) can defer Patent Office consideration of the application by up to 30 months. Since a patent runs for 20 years from the application date, i.e., for this case from the PCT filing date, this is generally not of value to many inventors.
• Note that a foreign filing license may be required to file a PCT application with the International Bureau or with a foreign filing office.

NATIONAL STAGE

When to File in the National Stage. If you get to the national stage of the PCT process and are faced with a decision as to where to file national stage applications, you probably should consider several factors.  First and foremost, filing national stage patent applications is a business decision.

• This business decision should be guided by several factors, including where the markets for your products are located, where your products could be marketed in the future, where you products are manufactured today, where your products could be manufactured in the future, where your competitors are manufacturing and marketing their products, and the total you have to invest in patent protection.
• If several countries are involved, an initial PCT application might be filed with the expectation that the national stage (30 months from the priority date) will be highly selective towards key states where one might expect to sell or manufacture, as well as possibly import, distribute, use, or transport their invention.  When competitors are known, protection only in countries where competitors are located can be effective worldwide patent coverage because manufacturing or sale of the invention has been covered.
• Decisions on the states to cover during the national stage (30 months after the priority date) should also be made with due regard for the actual protection afforded by foreign patent laws and systems. Small businesses should target countries that offer appropriate patent protection and meaningful enforcement.  The United States Trade Representative (USTR) has identified a “Priority Watch List” and “Watch List”  of countries that exhibit “particular problems.”  The Priority Watch List includes: Argentina, Chile, China, India, Indonesia, Russia, and Venezuela. This report plus additional info on other countries is on the USTR web site , which identifies countries that deny adequate and effective protection for intellectual property rights, or deny fair and equitable market access for persons that rely on intellectual property protection.

PRACTICAL JUDGMENT

Bottom Line and Note of Caution. The ultimate selection as to where to seek patent protection is as much a strategic question as it is a cost and motivational question. With the PCT one can keep options open. The PCT process can postpone the final decision as to what nations patent protection will be sought as well as defer to the latest possible time decisions as to how high the cost can be shouldered to obtain and then enforce the patent.

PCT EXPLANATION BREAKOUT

LAYOUT. The PCT is a complex subject are that requires more than one page of explanation.  The PCT discussion is on 5 web pages:

• pct — explains what the PCT process is and some reasons for filing.
• pctexplain — explains how the PCT process works.
• pctstrategy — explains potential PCT filing strategies to consider. You are on this page now.
• pctcosts — explains the costs of various PCT filings.
• pctnat — explains the U.S. National Stage of the PCT process.